Trademarks

The Trademark Clearinghouse ("TMCH") officially launches today, March 26th. The TMCH was created to help trademark holders prevent trademark infringement or misuse in the face of new top-level domains (TLDs) that are expected to launch over the next few years. There are nearly 2,000 applications for these new TLDs, and include domains such as ".inc" .home" and ".kitchen" among many others. There is valid concern among trademark owners that registration of domains like the following will confuse consumers about the source of the domain and its content: It would be prohibitively expensive, however, for a trademark owner to have to register their marks in every one of those 2,000 domains in order to block squatters or prevent trademark infringement. Thus, the TMCH was created to protect trademarks in two ways:

Sunrise Service - at least 30 days before a domain name is offered to the general public, trademark holders who have registered with the TMCH will be able to register their domain name in the TLD. In other words, TMCH registrants will be able to purchase before the general public can; and

Claims Services - when a potential domain name registrant attempts to register a domain name that matches a trademark term in the TMCH, he or she will receive a warning notice. If the domain name is ultimately registered, the trademark holder with the corresponding mark will receive notification of the domain name registration, allowing them to take appropriate action.

Registration costs are $150 per mark per year, with minor discounts available for 3 or 5 year registrations. Eligible marks include:

Nationally or regionally registered word marks from all jurisdictions;

Word marks that have been validated through a court of law or other judicial proceeding;

Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion; and

Other marks that constitute intellectual property may be recorded in the Clearinghouse by arrangement with a registry.

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Two related bills aimed at curbing rampant copyright and trademark infringement on the Internet are currently pending before the House and Senate. While the bills have been endorsed by the RIAA and MPAA and have strong bipartisan support in Congress, they have come under fire by mainstream media and civil liberties groups who believe the bills would shift too much responsibility onto ISPs, advertisers, and payment processors while also giving the U.S. government and trademark and copyright holders too much power to block allegedly infringing websites without sufficient due process. The Senate PROTECT IP Act of 2011 (S.968) The bills began in the Senate, where Senator Patrick Leahy (D-VT) introduced the Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act,” or the PROTECT IP Act (“PIPA”) in May of 2011 (S.968). The PROTECT IP Act would establish a system where the Justice Department could take down websites dedicated to copyright-infringing or counterfeit activities, including sites that solely promote distribution of illegal copies, counterfeit goods, or anti-DRM technology. The Act would give the DoJ the ability to obtain court orders preventing financial transaction providers, Internet advertising services, Internet service providers, and information location tools from linking to or processing financial transactions to or from the “rogue site.” Trademark and copyright holders would also be able to apply for a court injunction against the domain name to compel financial transaction providers and Internet advertising services to stop processing transactions to and placing ads on the website, if they have been harmed by the activities of the rogue website. The PROTECT IP Act was recently reviewed by the Senate Judiciary Committee and is still pending in the Senate. The House E-PARASITE Act (H.R.3261) The “Enforcing and Protecting American Rights Against Sites Intent on Theft and Exploitation,” or E-PARASITE Act, was introduced on October 26, 2011 by Rep. Lamar Smith (R-TX) (the bill was formerly known as the Stop Online Piracy Act, or SOPA) (H.R.3261). The E-PARASITE Act would authorize the DoJ to initiate federal court procedures against criminal activities conducted on foreign infringing sites engaging in copyright infringement, counterfeit goods, or theft of trade secrets. Again, courts could issue orders to ISPs, payment network providers, search engines, and advertising services to take “technically feasible and reasonable measures” to prevent access to the rogue site. Similar to the PROTECT IP Act, trademark and copyright holders would use a process similar to the Digital Millennium Copyright Act (DMCA) to seek limited injunctive relief against the rogue site. The E-PARASITE Act was recently sent to the House Committee on the Judiciary where it was referred to the Subcommittee on Intellectual Property, Competition and the Internet. Proponents and Critics Proponents of the bills, including the Recording Industry Association of America (RIAA) and the Motion Picture Association of America (MPAA), maintain that the legislation is vital in order to address the widespread copyright and trademark infringement on the Internet. See, for example:

There are also numerous critics of the bills who are concerned about the suppression of speech without due process and the effect of the bills on the Internet’s infrastructure, among other issues. See, for example:

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Case: Board Of Regents Of The University Of Wisconsin System v. Phoenix International Software, Inc. (7th Cir., Aug. 5, 2011) What happened:

This case presents complex questions about the law of trademark and the law of sovereign immunity, as the latter applies to a state university. . . . Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.” Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.”

Decision: On the trademark issue, the appeals court held that the issue of trademark infringement by the university software product was sufficiently close such that a trial would be needed to decide that issue. On the sovereign immunity issue, the state university waived its sovereign immunity when it filed suit in the federal district court seeking to reverse a decision made by the Trademark Office.Comment: Be careful not to lose sovereign immunity by litigation conduct, such as the filing of lawsuits.

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ICANN, the Internet Corporation for Assigned Names and Numbers, is responsible for managing the hundreds of top-level domains (TLDs) on the Internet, including well-known TLDs such as .com, .gov, and .edu. In early 2011, ICANN approved the new .xxx domain, intended to serve as a voluntary TLD for pornographic sites on the Internet.
First proposed over ten years ago, the .xxx TLD has faced serious opposition from politicians and advocacy groups, as well as from trademark owners who are concerned about possible misuse of their trademark. To address these concerns the Florida-based company that will oversee the domain, ICM Registry, has established a procedure for blocking domains related to legitimate trademarks.
Domain Name Registration
During an initial 52-day “Sunrise” period (September 7, 2011 through October 28, 2011), intellectual property holders with verifiable trademark rights can reserve domain names to ensure that those names are not registered as domain names by others. Each domain name registration will typically cost between $200 and $300. Successfully blocked domain names will resolve to a standard information page indicating that the domain name is not available for registration.
At the end of the Sunrise period others will be prevented from registering the reserved domain name, but only if no member of the “adult Sponsored Community” has applied for the domain name. If a member of the “adult Sponsored Community” does apply for the domain name, that member will be given priority in the domain name and the trademark holder will be required to seek other methods of protecting its mark.
During a later period of “General Availability” beginning on December 6, 2011, all remaining .xxx domain names will be allocated on a first come, first served basis.
Domain Name Disputes
Despite ICM Registry’s procedure, many trademark holders will not register a domain name, and most trademark holders will find it too expensive to register all confusingly similar variants of their mark. Accordingly, there are several mechanisms by which trademark owners can protect their rights, including the Uniform Dispute Resolution Policy (UDRP) and ICM Registry’s newly-formed Rapid Evaluation Service (RES), which is incorporated directly into registrant’s agreement with ICM and was designed specifically for resolution of .xxx disputes. RES is largely modeled after the UDRP process but is designed to lead to a resolution in 2-5 days and eliminate some of the of the uncertainty found in current UDRP case law.
We will be happy to register your trademark during either the Sunrise Period or during the General Availability period. Alternatively, you can apply to register your mark at one of these registrars.
The Take Home Message
Regardless of whether you decide to reserve your trademark’s domain name, observation of the new .xxx TLD should be part of your brand monitoring efforts.